Opinions — Tuesday, April 14, 2026

The Federal Circuit reversed-in-part and affirmed-in-part summary judgment of noninfringement in favor of Intel Corporation regarding VLSI Technology LLC's assertions of U.S. Patent No. 8,566,836, which relates to selecting processor cores to execute tasks in a multi-core system. The district court had granted Intel summary judgment on two independent grounds: extraterritoriality and rejection of VLSI's doctrine of equivalents theory. The Federal Circuit reversed on extraterritoriality for both method and apparatus claims, holding that a pretrial stipulation unambiguously established that 70% of accused products meeting the claims' technical requirements "without regard to geographic considerations" would automatically be deemed to have the requisite U.S. nexus under 35 U.S.C. § 271. The court also reversed summary judgment on the doctrine of equivalents theory for the apparatus claims, concluding the district court erroneously invoked prosecution disclaimer to import an unrecited "upon identifying" temporal limitation into claim 10, as the prosecution history statements were ambiguous and not a clear and unmistakable disavowal of claim scope.

The decision provides important guidance on the binding effect of stipulations addressing U.S. nexus for infringement purposes, clarifying that parties cannot later reinterpret plain contractual language to escape strategic choices that prove unfavorable. The court distinguished stipulating to facts relevant to infringement from admitting infringement itself, rejecting Intel's attempt to recharacterize the agreement as merely a damages calculation mechanism despite explicit reference to Section 271. On prosecution disclaimer, the decision reinforces the demanding "clear and unmistakable" standard, holding that "see, e.g." citations and statements susceptible to multiple reasonable interpretations cannot support disclaimer even when arguably connecting claim language to prosecution characterizations. The ruling also addresses the "reasonably capable" standard for apparatus claim infringement, clarifying that products with structural means to perform claimed functions can infringe even when external devices enable their use, provided no product modification is required.

The Federal Circuit affirmed the District of Utah's grant of summary judgment invaliding claims 1, 12, 21, 23, 27, 28, 31, and 32 of U.S. Patent No. 8,458,689 under the pre-AIA on-sale bar of 35 U.S.C. § 102(b). Plaintiff-Appellant Definitive Holdings challenged the district court's reliance on two categories of evidence: (1) Rule 30(b)(6) deposition testimony from Hypertech CEO Ramsey regarding sales of the accused prior art device (the "PP3") and authentication of source code, allegedly beyond his personal knowledge; and (2) the PP3 source code itself, which Definitive contended was inadmissible hearsay. The Federal Circuit held that Ramsey's testimony satisfied Federal Rule of Evidence 602's personal knowledge requirement to the extent he authenticated sales records and identified the source code version used in the 1996 device, even though he joined Hypertech after the critical date. The court further held that source code commands, as distinct from comments or descriptive text within code, are not hearsay because they are instructions rather than assertions offered for their truth, distinguishing Wi-Lan Inc. v. Sharp Electronics Corp. on the ground that case addressed trustworthiness under the business records exception rather than the threshold hearsay question.

The ruling provides critical guidance on evidentiary issues at the intersection of Rule 30(b)(6) depositions and summary judgment in patent cases. While the court declined to resolve the broader circuit split over whether corporate designee testimony outside personal knowledge may be considered at summary judgment when inadmissible at trial, it established that authentication testimony grounded in the witness's own review of records and company practices satisfies the personal knowledge standard even for historical events predating the witness's tenure. The source code holding clarifies that executable code commands fall outside hearsay definitions entirely, a significant determination for software-related prior art disputes where code itself demonstrates functionality. By limiting its analysis to whether the witness had sufficient personal knowledge to authenticate records rather than adopting a categorical rule about Rule 30(b)(6) testimony, the court preserved defendants' ability to use corporate designees to establish prior art facts while leaving open arguments about admissibility in cases where authentication or direct knowledge cannot be established through the designee's own testimony.

In MSN Laboratories Private Ltd. v. Bausch Health Ireland Ltd., the Federal Circuit granted appellants' unopposed motion to voluntarily dismiss their appeal from Patent Trial and Appeal Board decisions in IPR2022-00722 and IPR2023-00016 pursuant to Federal Rule of Appellate Procedure 42(b). The court ordered that each side shall bear its own costs.